Trademarks Office Releases An Updated Wares and Services Manual
Today the Trademarks Office announced the release of a newly revised and updated Wares and Services Manual to clarify requirements and policies for the description of the products and services in Canadian trademark applications. The Trademarks Office has additionally provided a three-part test for assessing the sufficiency of a wares and services description for the purpose of satisfying section 30(a) of the Trade-marks Act (i.e. the wares and services must be described in ordinary commercial terms).
The revisions also clarify office policies regarding terminology which generally necessitates that an Applicant provide greater specificity prior to Approval (i.e. will prompt a request for further clarification): "parts and fittings", accessories, equipment, apparatus, computer software, systems, products, discs and pre-recorded media, nutritional supplements, etc.
Lastly, whereas the current manual is in pdf form, the new manual has been introduced in electronic form only thereby enabling faster revision and policy releases following changes in policy, interpretation, new Practice Notices, etc.
Today the Trademarks Office announced the release of a newly revised and updated Wares and Services Manual to clarify requirements and policies for the description of the products and services in Canadian trademark applications.
The Trademarks Office has additionally provided a three-part test for assessing the sufficiency of a wares and services description for the purpose of satisfying section 30(a) of the Trade-marks Act (i.e. the wares and services must be described in ordinary commercial terms):
The following three-part test will be considered in this determination:
- Are the wares or services sufficiently specific so that it is possible to assess whether paragraph 12(1)(b) of the Trade-marks Act applies? A mark that clearly describes a character or quality of the wares or services is not registrable.
- Are the wares or services sufficiently specific so that it is possible to assess confusion? A mark that is confusingly similar to a registered trade-mark or a pending trade-mark is not registrable.
- Are the wares or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, wares described as "computer software", without further specification, would give the applicant an unreasonably wide range of protection.
The revisions also clarify office policies regarding terminology which generally necessitates that an Applicant provide greater specificity prior to Approval (i.e. will prompt a request for further clarification): "parts and fittings", accessories, equipment, apparatus, computer software, systems, products, discs and pre-recorded media, nutritional supplements, etc.
Lastly, whereas the current manual is in pdf form, the new manual has been introduced in electronic form only thereby enabling faster revision and policy releases following changes in policy, interpretation, new Practice Notices, etc.
